OPPOSITION No B 2 617 275

Weichert Co., 1625 State Route 10, Morris Plains, New Jersey 07950, United States of America (opponent), represented by Taylor Wessing LLP, 5 New Street Square, London EC4A 3TW, United Kingdom (professional representative)

a g a i n s t

Bartsch & Weickert Berlin GmbH, Koppersstraße 22, 40549 Düsseldorf, Germany (applicant), represented by CMS Hasche Sigle, Breite Str. 3, 40213 Düsseldorf, Germany (professional representative).

On 10/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 617 275 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 320 816. The opposition is based on four earlier European Union trade mark registrations:

European Union trade mark registration No 13 816 756 European Union trade mark registration No 11 677 515 WEICHERT WORKFORCE MOBILITY European Union trade mark registration No 11 259 173 European Union trade mark registration No 13 824 181 WEICHERT OPTIMIZING YOUR MOBILE WORKFORCE

Earlier trade marks

The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registrations No 11 677 515 and No 13 824 181.

1. The services

The services on which the opposition is based are the following:

European Union trade mark registration No 11 677 515:

Class 35: Business and personnel relocation services; Business consulting services in the field of corporate relocation policy, management and administration, involving both employees and facilities; Providing referrals and assistance to relocating employees in the arrangement of various supplier services related to relocation; Administering employee and business relocation services and policies of others; Job assignment and relocation services, namely, globally administering relocation services associated with an employee's job assignment; Destination services, namely, providing consumer information for relocated employees about general consumer services in new destination; Business and personnel relocation consulting services, namely, assisting and advising relocating employees on the purchase and sale of residential real estate.

Class 36: Real estate and financial services, namely, brokerage of commercial and residential real estate; rental of apartments, houses, town houses and condominiums; real estate management; mortgage brokerage.

Class 39: Moving and physical relocation services for household goods and business furnishings.

European Union trade mark registration No 13 824 181:

Class 35: Business and personnel relocation services; Business consulting services in the field of corporate relocation policy, management and administration, involving both employees and facilities; Providing referrals and assistance to relocating employees in the arrangement of various supplier services related to relocation; Administering employee and business relocation services and policies of others; Job assignment and relocation services, namely globally administering relocation services associated with an employee's job assignment; Destination services, namely counseling relocated employees about general consumer services and area information relating to new destination; business and personnel relocation consulting services, namely assisting and advising relocating employees on the purchase and sale of residential real estate.

Class 36: Real estate and financial services, namely brokerage of commercial and residential real estate; rental of apartments, houses, town houses and condominiums; real estate management; mortgage brokerage.

Class 39: Moving and relocation services for household goods and business furnishings.

The contested services are the following:

Class 35: Advertising; Business management; Business administration; Office functions; In particular business assistance, business management and administrative services, in particular (in connection with the) planning of removals.

Class 37: Building construction; Repair of goods, namely furniture; Assembly of goods, in particular furniture.

Class 39: Transport; Packaging and storage of goods; Travel arrangement; Removal services; In particular domestic and international transport, freight forwarding, rental of lorries, vehicles and hoists, consultancy relating to removals.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The term ‘in particular’, used in the applicant’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s and the opponent’s list of services to show the relationship of individual services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested services in Class 35

Bearing in mind what has been said above about the term ‘in particular’ the contested in particular business assistance, business management and administrative services, in particular (in connection with the) planning of removals are only examples of items included in the categories that precede it, namely advertising; business management; business administration; office functions. Therefore, the comparison will proceed only with these categories.

The contested business administration is a service intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation’s board of directors. These services consist of organising people and resources efficiently so as to direct activities toward common goals and objectives. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation, since they enable a business to perform its business functions and are usually carried out by an entity that is separate from the business in question. They are rendered by, inter alia, employment agencies, auditors and outsourcing companies. Therefore, business administration includes, as a broader category almost all the opponent’s Class 35 services, for example administering employee and business relocation services and policies of others. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested office functions are the internal day-to-day operations of an organisation including the administration and the support services in the ‘back office’. They mainly cover activities that assist in the working of a commercial enterprise. They include activities typical of secretarial services, such as shorthand and typing, compilation of information into computer databases, invoicing, administrative processing of purchase orders, as well as support services, such as the rental of office machines and equipment.

Business management services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

These services (office functions and business management services) have a similar nature and purpose to the opponent’s Class 35 services. Furthermore they are directed at the same public as the opponent’s Class 35 services, namely business owners and managers, and will appear via the same distribution channels, such as trade fairs and magazines. Therefore, the contested business management and office functions are considered to be similar to all the opponent’s Class 35 services.

Advertising consists of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc. The opponent’s services can be summarised as business and personnel relocation services in Class 35, commercial and residential real estate and rental of residential buildings and mortgage brokerage in Class 36 and moving and physical relocation services for household goods and business furnishings in Class 39. These services have no points of contact with the contested advertising services; they have a different purpose, different methods of use, and come from different providers via different channels. Consequently, these services are considered to be dissimilar.

Contested services in Class 37

The contested assembly of goods, in particular furniture has a low degree of similarity with the opponent’s Class 39 service moving and relocation services for household goods and business furnishings, because it is possible that the service of assembling furniture is offered as part of the opponent’s moving and relocation services. Therefore, they can share the same providers, distribution channels and end users.

The contested building construction is a service which has no links with the opponent’s services which are summarised already above. They have a very different purpose, different methods of use, come from different providers and target different consumers via different channels. Consequently, these services are considered to be dissimilar. The same is true for the contested repair of goods, namely furniture. These services are carried out by specialist craftsmen skilled in the repair of furniture or the manufacturers of furniture who already have an understanding of the construction of the goods. They are not services usually provided by mover and companies providing relocation or real estate services. The nature, purpose and methods of use are different and they come from different providers and target different consumers via different channels. Consequently, these services are also considered to be dissimilar.

Contested services in Class 39

As mentioned above for the services in Class 35 and bearing in mind what has been said above about the term ‘in particular’ the contested in particular domestic and international transport, freight forwarding, rental of lorries, vehicles and hoists, consultancy relating to removals are only examples of items included in the categories that precede it, namely transport; packaging and storage of goods; travel arrangement; removal services. Therefore, the comparison will proceed only with these categories.

The contested transport and removal services include as broader categories the opponent’s moving and relocation services for household goods and business furnishings. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested packaging and storage of goods are services concerned with the safekeeping of goods. They have links with the opponent’s moving and relocation services for household goods and business furnishings in that the services can be provided by the same providers, target the same end users and be available via the same distribution channels.

The contested travel arrangement is similar to a low degree to the opponent’s moving and relocation services for household goods and business furnishings. They have a similar overall purpose and can target the same end user via similar distribution channels.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical or similar to various degrees are directed primarily at business professionals operating businesses, although some of them can also be directed at the public at large (namely Class 37: assembly of goods, in particular furniture and Class 39: transport; packaging and storage of goods; travel arrangement; removal services. The services at issue are infrequent purchases, their price can be relatively high and they could have a notable impact for the functioning of a business. The degree of attention is considered to be at least above average.

3. The signs

European Union trade mark registration No 11 677 515: WEICHERT WORKFORCE MOBILITY European Union trade mark registration No 13 824 181: WEICHERT OPTIMIZING YOUR MOBILE WORKFORCE
Earlier trade marks	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

Both earlier marks are word marks. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether they are presented in upper or lower case letters, or in a combination thereof. Furthermore, being word marks, the marks have no elements that could be considered clearly more dominant than other elements.

The word ‘WEICHERT’, present in both earlier marks, has no particular meaning in any of the relevant languages, but might be understood by German speakers as a surname. The expressions ‘WORKFORCE MOBILITY’ and ‘OPTIMIZING YOUR MOBILE WORKFORCE’ consist of English words and will be understood by English speakers. In the first mark they indicate that the services provided are for travelling employees whilst in the second it is a laudatory slogan implying that the provider will enhance in some unspecified manner the customer’s employees who travel. These meanings might be understood by parts of the non-English speakers as the services are directed at business professionals with foreign language skills. However, some parts of the public will not understand these expressions. Consequently, for a part of the services (namely Classes 35 and 39) and a part of the public ‘WEICHERT’ is the most distinctive element, but for other services and/or parts of the public all the elements are of equal distinctiveness.

The contested sign is a figurative mark, but one which consists entirely of words with little figurative embellishment. The first elements ‘Bartsch& Weickert’ have no particular meaning in any language, but will be seen in certain territories, for instance Germany, as the surnames of two people. The element & will be widely understood as representing the conjunction word ‘and’. The word ‘MOVERS’ is an English word indicating that the applicant is a haulier (transporter of goods). This will be understood in some territories, but not all. Consequently, for a part of the services (namely Class 39) and a part of the public ‘Bartsch & Weickert’ are the most distinctive elements, but for other services and/or parts of the public all the elements are of equal distinctiveness. None of the contested sign’s elements could be considered more dominant.

Visually, the signs coincide in the letters ‘WEIC*ERT’, which appear in the first word of the two earlier marks and as the third element of the contested sign. They differ in the fifth letter (an ‘H’ vs ‘K’) of these words as well as the other elements of the marks, namely ‘WORKFORCE MOBILITY’ and ‘OPTIMIZING YOUR MOBILE WORKFORCE’ from the earlier marks and ‘Bartsch &’ and ‘MOVERS’ from the contested sign.

The fact that the signs do not coincide in their first words is particularly relevant, since consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right or from top to bottom, which makes the part placed at the left or on top of the sign (the initial part) the one that first catches the attention of the reader. Moreover, the differing first word of the contested sign is always of normal distinctiveness.

Therefore, the signs are at most visually similar to a below average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘WEIC*ERT’ that form the majority of the first word of the earlier marks and the third element of the contested sign. The signs also share the sound of the letters ‘MO’, which appear at the beginning of a word in all the signs (‘MOBILITY’ and ‘MOVERS’).

Given that there is a range of languages in the relevant territory there will be various ways in which the words are pronounced. Therefore, at least for a part of the relevant public, for example the German speakers, the words ‘WEICHERT’/‘WEICKERT’ will be highly similar when pronounced. However, other publics will pronounce the ‘CH’ softly and, therefore, these elements will not be so similar. Likewise the ‘MO’ sound will be pronounced differently by English speakers (moe vs. mu), but for Spanish speakers they will be pronounced identically.

However, the signs differ in their other verbal elements, namely ‘WORKFORCE **BILITY’ and ‘OPTIMIZING YOUR **BILE WORKFORCE’ from the earlier marks and ‘Bartsch &’ and ‘MOVERS’ from the contested sign.

Consequently, the best aural scenario for the opponent is the German public. Here the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For a part of the public the signs will be associated with different meanings making them conceptually dissimilar although these concepts will be weak for a part of the services. For other publics, they will see surnames, but not the same ones, and therefore there is no conceptual similarity. Finally, for the public which sees no concepts the conceptual comparison has no impact.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier marks

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent the earlier trade marks enjoy a high degree of distinctiveness as result of their long standing and intensive use in the European Union in connection with all the services for which they are registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence to support this claim and stated that the turnover figures for services provided in the EU under the marks is more than 1.5 million US dollars per year and that the opponent has spent more than 150,000 US dollars per year in relation to advertising the services provided under the marks in the EU.

1. A 2014 article in the Finance Director Europe magazine where the opponent’s Vice President of Global Financial Services, Mr Stewart McCardle, discusses the implications of failing to conform to regional employment regulations, tax considerations and immigration laws when relocating employees;

2. A 2014 advertisement placed in the United Kingdom magazine Re-Locate.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a high degree of distinctiveness through their use.

The evidence shows no indication of the degree of recognition of the trade marks by the relevant public. The fact that a magazine carried out an interview with one of the opponent’s employees (Vice President) does not provide sufficient information on the public’s recognition of the marks. Likewise, a single advertisement is also insufficient to allow the Opposition Division to gauge the degree of awareness of the marks.

Furthermore, as far as the probative value of the opponent’s statements regarding turnover figures and investment in advertising are concerned, statements drawn up by the interested parties themselves are generally given less weight than independent evidence, because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources. However, in this case the statements made by the opponent regarding the turnover and investment in advertising are not supported in any way by the submitted evidence (for example, there is no evidence of any sales or public records showing the volume of sales and one advertisement is clearly insufficient by itself to support a claim of an investment in advertising of 150,000 US dollars).

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of some non-distinctive elements at least for parts of the relevant public as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Whilst the relevant public only rarely has the chance to make a direct comparison between the different signs and must rely on an ‘imperfect recollection’ of them, a high level of attention of the relevant public may lead to conclude that it will not confuse the marks, despite the lack of direct comparison between the trade marks (22/03/2011, T-486/07, CA, EU:T:2011:104, § 95).

The contested services are partially identical, partially similar to various degrees and partially dissimilar to the opponent’s services. Those found to be identical or similar (to various degrees) are services directed primarily at professionals but in part at the public at large, and the degree of attention is at least above average.

The best case scenario for the opponent is when the English words are found to be weak, and for the purposes of the analysis we will assume this is the case for all the services in question, even though as detailed above this is not the case. Under these circumstances the signs in conflict consist of their remaining distinctive terms: ‘WEICHERT’ from the earlier marks and ‘Bartsch & Weickert’ from the contested sign. Here the signs have a degree of similarity by virtue of sharing several letters in one verbal element. However, against this it must be remembered that even then the verbal element is not same (there remains one letter difference) and this will introduce at the very least a degree of difference. Furthermore, this is not the only element of the contested sign. There the order, length and composition of the signs are clearly very different from the earlier marks: the first elements are different and the signs are one word vs. three words and the symbol &. In addition it should be remembered that for the services in question the degree of attention is considered to be at least above average. Therefore, even under the best case scenario for the opponent, the Opposition Division is of the opinion that the signs are sufficiently different to not lead to a likelihood of confusion for the relevant public.

Clearly, if this is the result under the opponent’s best case scenario, it must also hold true for those cases where the other factors are less advantageous to the opponent. Consequently, there is no likelihood of confusion on the part of the public for these two earlier marks.

The opponent has also based the opposition on the following earlier marks:

• European Union trade mark registration No 13 816 756 for the figurative mark:

for services in Classes 35, 36 and 39.

• European Union trade mark registration No 11 259 173 for the figurative mark:

for services in Classes 35, 36 and 39.

These marks cover the same services as already compared above and cover, essentially, figurative iterations of the two word marks already compared above. Given that these two marks vary only in the addition of figurative elements in both (a bright yellow background and the position of elements) and verbal elements in the case of one of them, the Opposition Division finds that the arguments detailed above regarding the opponent’s two word marks are equally valid here. Considering this, there is also no likelihood of confusion on the part of the public for these two earlier marks. Therefore, the opposition must be rejected.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Chantal VAN RIEL

Ric WASLEY

Vita VORONECKAITĖ

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.